IN THE UNITED STATES PATENT AND TRADEMARK OFFICE
`
`Bernard Hunt
`In re Patent of:
`6,868,079 Attorney Docket No.: 39521-0060IP1
`U.S. Patent No.:
`March 15, 2005
`Issue Date:
`Appl. Serial No.: 09/455,124
`Filing Date:
`December 6, 1999
`Title:
`Radio Communication System With Request Re-
`Transmission Until Acknowledged
`
`SECOND DECLARATION OF DR. PAUL G. STEFFES
`
`1
`
`Exhibit 1018
`Apple et al. v. Uniloc
`IPR2019-00510
`
`
`
`Bernard Hunt
`In re Patent of:
`6,868,079 Attorney Docket No.: 39521-0060IP1
`U.S. Patent No.:
`March 15, 2005
`Issue Date:
`Appl. Serial No.: 09/455,124
`Filing Date:
`December 6, 1999
`Title:
`Radio Communication System With Request Re-
`Transmission Until Acknowledged
`
`SECOND DECLARATION OF DR. PAUL G. STEFFES
`
`1
`
`Exhibit 1018
`Apple et al. v. Uniloc
`IPR2019-00510
`
`
`
`TABLE OF CONTENTS
`
`I.
`QUALIFICATIONS AND BACKGROUND INFORMATION ......... 3
`LEGAL PRINCIPLES .......................................................................... 5
`II.
`A. Anticipation ........................................................................................... 5
`B. Obviousness ........................................................................................... 6
`III. OVERVIEW OF CONCLUSIONS FORMED ..................................... 7
`IV. GROUND 1: WOLFE IN VIEW OF BOUSQUET AND
`PATSIOKAS RENDERS CLAIMS 17 AND 18 OBVIOUS UNDER
`35 U.S.C. § 103 ..................................................................................... 8
`A. A POSITA Would Have Found Claim 17 Obvious (Grounds 1 and 2) .
`
` ............................................................................................................ 8
`B. The combination of Wolfe and Bousquet (Ground 1) and Wolfe,
`Bousquet, and Everett (Ground 2) renders obvious the retransmission
`limitation ................................................................................................ 8
`C. The Combinations with Patsiokas are Proper ..................................... 13
`V. ADDITIONAL REMARKS ................................................................ 18
`
`
`
`2
`
`
`
`
`I, Paul G. Steffes, Ph.D., of Atlanta, Georgia, declare that:
`
`
`I.
`1.
`
`QUALIFICATIONS AND BACKGROUND INFORMATION
`I am currently a Professor and former Associate Chair for Research in
`
`the School of Electrical and Computer Engineering at the Georgia Institute of
`
`Technology ("Georgia Tech"). I began teaching at Georgia Tech in 1982 and have
`
`served on the academic faculty at Georgia Tech for over 36 years.
`
`2.
`
`I received a Ph.D. degree in Electrical Engineering from Stanford
`
`University in 1982, and S.M. and S.B. degrees in Electrical Engineering from
`
`Massachusetts Institute of Technology in 1977, as shown in my curriculum vitae.
`
`See Exhibit-1004.
`
`3.
`
`In writing this supplemental Declaration, I have considered the
`
`following: my own knowledge and experience, including my work experience in
`
`the fields of satellite and terrestrial radio communications systems; my experience
`
`in teaching those subjects; and my experience in working with others involved in
`
`those fields. In addition, I have analyzed the other materials I cite in my original
`
`Declaration (EX1003, which is incorporated herein by reference in its entirety) as
`
`well as the following additional documents, publications, and materials:
`
` the Petition for Inter Partes Review (Paper 1)
`
` the Board’s Institution Decision (“Decision”, Paper 7))
`
` the Patent Owner Response (“Response,” Paper 9)
`
`3
`
`
`
` Joe Flower, Iridum, Wired (May 1993) (“Iridium”, Exhibit-1019)
`
`(select portions)
`
` Honey Berman, LEOs and MEOs, Via Satellite (March 1998) (“Via
`
`Satellite”, Exhibit-1020)
`
` John L. Everett, Very Small Aperture Terminal (VSATs), Institution of
`
`Electrical Engineers (IEE), Telecommunication Series 28, First
`
`Edition (1992) (“Everett-2”; Exhibit-1023) (select portions);
`
` Robert G. Winch, Telecommunication Transmission Systems,
`
`McGraw-Hill, First Edition (1993) (“Winch”; Exhibit-1024) (select
`
`portions)
`
`4.
`
`Each of these foregoing references (not including the legal documents
`
`or patents) were published in publications or libraries with which I am familiar,
`
`and which would have been available to and disseminated to members of the
`
`general technical community prior to December 10, 1998.
`
`5.
`
`Although this Declaration refers to selected portions of the cited
`
`references for the sake of brevity, it should be understood that these are examples,
`
`and that one of ordinary skill in the art would have viewed the references cited
`
`herein in their entirety and in combination with other references cited herein or
`
`cited within the references themselves. The references used in this Declaration,
`
`therefore, should be viewed as being incorporated herein in their entirety.
`
`4
`
`
`
`6.
`
`I am not, and never was, an employee of the Petitioners in this
`
`proceeding, Apple Inc., LG Electronics Inc., Samsung Electronics Co., Ltd., and
`
`Samsung Electronics America, Inc. (collectively “Petitioners”). I have been
`
`engaged in the present matter to provide my independent analysis of the issues
`
`raised in the petition for inter partes review of the ’079 Patent. I received no
`
`compensation for this Declaration beyond my normal hourly compensation based
`
`on my time actually spent studying the matter, and I will not receive any added
`
`compensation based on the outcome of this inter partes review of the ’079 Patent.
`
`II. LEGAL PRINCIPLES
`A.
`
`Anticipation
`I have been informed that a patent claim is invalid as anticipated
`
`7.
`
`under 35 U.S.C. § 102 if each and every element of a claim, as properly construed,
`
`is found either explicitly or inherently in a single prior art reference. Under the
`
`principles of inherency, if the prior art necessarily functions in accordance with, or
`
`includes the claimed limitations, it anticipates.
`
`8.
`
`I have been informed that a claim is invalid under 35 U.S.C. § 102(a)
`
`if the claimed invention was known or used by others in the U.S., or was patented
`
`or published anywhere, before the applicant’s invention. I further have been
`
`informed that a claim is invalid under 35 U.S.C. § 102(b) if the invention was
`
`patented or published anywhere, or was in public use, on sale, or offered for sale in
`
`5
`
`
`
`this country, more than one year prior to the filing date of the patent application.
`
`And a claim is invalid, as I have been informed, under 35 U.S.C. § 102(e), if an
`
`invention described by that claim was described in a U.S. patent granted on an
`
`application for a patent by another that was filed in the U.S. before the date of
`
`invention for such a claim.
`
`B. Obviousness
`I have been informed that a patent claim is invalid as “obvious” under
`
`9.
`
`35 U.S.C. § 103 in light of one or more prior art references if it would have been
`
`obvious to a person of ordinary skill in the art at the time of the invention of the
`
`’079 Patent (“POSITA”), taking into account (1) the scope and content of the prior
`
`art, (2) the differences between the prior art and the claims, (3) the level of
`
`ordinary skill in the art, and (4) any so called “secondary considerations” of non-
`
`obviousness, which include: (i) “long felt need” for the claimed invention, (ii)
`
`commercial success attributable to the claimed invention, (iii) unexpected results
`
`of the claimed invention, and (iv) “copying” of the claimed invention by others.
`
`For purposes of my analysis, and because I know of no indication from the patent
`
`owner or others to the contrary, I have applied a date of December 10, 1998 (the
`
`“Critical Date”), as the date of invention in my analyses, although in many cases
`
`the same analysis would hold true even at a time earlier than December 10, 1998.
`
`6
`
`
`
`10.
`
`I have been informed that a claim can be obvious in light of a single
`
`prior art reference or multiple prior art references. To be obvious in light of a
`
`single prior art reference or multiple prior art references, there must be a reason to
`
`modify the single prior art reference, or combine two or more references, in order
`
`to achieve the claimed invention. This reason may come from a teaching,
`
`suggestion, or motivation to combine, or may come from the reference or
`
`references themselves, the knowledge or “common sense” of one skilled in the art,
`
`or from the nature of the problem to be solved, and may be explicit or implicit
`
`from the prior art as a whole. I have been informed that the combination of
`
`familiar elements according to known methods is likely to be obvious when it does
`
`no more than yield predictable results. I also understand it is improper to rely on
`
`hindsight in making the obviousness determination.
`
`III. OVERVIEW OF CONCLUSIONS FORMED
`11. This Declaration further expands the conclusions that I have formed
`
`based on my analysis, in addition to those provided in my first declaration
`
`(EX1003, which is incorporated herein by reference in its entirety). Based upon
`
`my knowledge and experience and my review of the prior art publications listed
`
`above, a POSITA would have found that claims 17 and 18 (“the Challenged
`
`Claims”) of the ’079 Patent are rendered obvious by Wolfe in view of Bousquet
`
`7
`
`
`
`and Patsiokas, or, alternatively, by Wolfe in view of Bousquet, Everett, and
`
`Patsiokas.
`
`IV. GROUND 1: WOLFE IN VIEW OF BOUSQUET AND
`PATSIOKAS RENDERS CLAIMS 17 AND 18 OBVIOUS
`UNDER 35 U.S.C. § 103
`A. A POSITA Would Have Found Claim 17 Obvious (Grounds
`1 and 2)
`12. Consistent with my findings provided in my original declaration
`
`(EX1003), all of the limitations of claim 17 would have been obvious to a POSITA
`
`based on the combination of Wolfe, Bousquet, and Patsiokas (Ground 1) and
`
`Wolfe, Bousquet, Everett, and Patsiokas (Ground 2). See Petition, 16-57.
`
`1.
`
`The combination of Wolfe and Bousquet (Ground 1) and
`
`Wolfe, Bousquet, and Everett (Ground 2) renders obvious
`
`the retransmission limitation
`
`13.
`
`In the Patent Owner Response, Uniloc stated that the combinations of
`
`(1) Wolfe and Bousquet and (2) Wolfe, Bousquet, and Everett do not teach the
`
`retransmission limitation.
`
`14. Regarding the Wolfe reference, Uniloc has mischaracterized the
`
`analysis presented in my first declaration. In particular, Uniloc criticized the
`
`Wolfe reference in isolation and argued that Wolfe fails to fully disclose the
`
`retransmission limitation. Response, 7-8 (“Petitioners improperly speculate
`
`through their declarant regarding Wolfe”). My first declaration, however,
`
`8
`
`
`
`recognized that Wolfe did not fully disclose the retransmission limitation. As set
`
`forth in my first declaration, Wolfe provides the framework of a contention-free
`
`communication system with allocated time slots. Bousquet (or Bousquet and
`
`Everett) suggests modification of Wolfe to perform retransmission in consecutive
`
`allocated time slots without waiting for an acknowledgement until said
`
`acknowledgement is received within Wolfe’s framework.
`
`15.
`
`In general, Uniloc provides arguments against the Wolfe reference by
`
`itself. But these arguments are unpersuasive because Uniloc’s attack of Wolfe
`
`alone fails to address the combination analysis presented in my first declaration.
`
`16. As to Bousquet, Uniloc stated that Bousquet teaches away from
`
`retransmitting in consecutive time slots as recited in claim 17 because Bousquet
`
`describes “[t]he systematic repetition of the access packets in the predefined time
`
`period.” Response, 8. But this passage from Bousquet does not teach away from
`
`the combination. Uniloc fails to provide any explanation of why a “predefined
`
`time period” would prohibit retransmission of the same respective request in
`
`consecutive allocated time slots without waiting for an acknowledgement. For
`
`instance, nothing in claim 17 requires that the retransmission occur indefinitely.
`
`Thus, retransmission of the same respective request in consecutive allocated time
`
`slots could occur without waiting for an acknowledgement until the
`
`acknowledgement was received from the primary station during a predefined
`
`9
`
`
`
`period. Claim 17 does not preclude use of a predefined period in performing
`
`retransmission.
`
`17. Uniloc also argues that Bousquet teaches away from re-transmitting
`
`the same respective request in consecutive allocated time slots without waiting for
`
`an acknowledgement until said acknowledgement is received from the primary
`
`station because “Bousquet teaches ‘n packets transmitted . . . spaced in time,
`
`preferably at random.’” Response, 9. Uniloc’s argument, however, fails to address
`
`my first declaration explaining how Bousquet’s teachings in a contention-based
`
`communication system would have been applied in Wolfe’s contention-free
`
`communication system.
`
`18. Specifically, “Bousquet describes that ‘[o]ther implementations are
`
`possible’ including transmission of packets with ‘temporal spacing’ thus, a
`
`POSITA would have found Bousquet’s techniques to be applicable systems where
`
`packet transmission is ‘spaced in time,’ like transmissions of a TDMA system,
`
`such as Wolfe’s.” Petition, 50-51 (citing to EX-1005, 1:1-15; EX-1006, 2:25-28,
`
`3:57-64; EX-1003, [99]). Further, the language of Bousquet which states that the
`
`“n packets transmitted . . . spaced in time, preferably at random,” implies that
`
`random transmission is one option, not the only option for transmitting packets.
`
`EX1006, 3:57-58 (emphasis added). For this reason, “a POSITA would have
`
`found it obvious to apply Bousquet’s approach to reduce call setup time even
`
`10
`
`
`
`though Bousquet applies a contention-based approach to uplink signaling as
`
`compared to Wolfe’s contention-free system.” Petition, 49-50.
`
`19. Regarding Everett, Uniloc argues that the proposed combination is
`
`deficit because Everett does not “disclose the required retransmitting the same
`
`respective request.” Response, 9-11. Uniloc argues that Everett does not
`
`retransmit because of its “use of randomly selected time intervals.” Response, 9-
`
`11. Uniloc appears to misinterpret the proposed combination of Wolfe, Bousquet,
`
`Everett, and Patsiokas that was presented in my first declaration.
`
`20.
`
`In particular, Everett teaches the use of “acknowledgement[s] to
`
`acknowledge, separate from an allocation, a secondary station’s request to the
`
`primary station for additional capacity and to retransmit the request until Everett’s
`
`acknowledgement is received” and “cease re-transmission once the secondary
`
`station has received an acknowledgement from the primary station.” Petition, 48
`
`(citing to EX-1008, 317-318, FIG. 17, 7), 75-76 (citing to EX-1008, 207). The
`
`analysis relies only on Everett’s concept of using acknowledgements and ceasing
`
`re-transmissions, thus it does not matter that Everett discusses the “use of
`
`randomly selected time intervals.” In fact, Everett’s use of random time intervals
`
`is inapplicable in Wolfe’s contention-free communication system where time slots
`
`are allocated and random transmissions are not performed.
`
`11
`
`
`
`21. Uniloc further stated that “none of the cited references of Wolfe,
`
`Bousquet, or Everett discloses the required retransmitting the same respective
`
`request ‘in consecutive allocated time slots without waiting for an
`
`acknowledgement until said acknowledgement is received from the primary
`
`station.’” Response, 11-12. Uniloc fails to address my explanation of how a
`
`POSITA would have combined the cited references and why a POSITA would
`
`have been motivated to perform the combination. For instance, as stated in my
`
`first declaration, “to maximize the speed of call setup while minimizing wasted
`
`bandwidth, a POSITA would have found it obvious to modify Wolfe to use all
`
`opportunities available for a successful request.” Petition, 32. “To achieve that
`
`result, a POSITA would have modified Wolfe to re-transmit requests in
`
`consecutive frames until a point in time when an acknowledgement of the first
`
`request would have been expected.” Id. (emphasis added).
`
`22. Accordingly, the proposed combination of Wolfe and Bousquet
`
`(Ground 1) or Wolfe, Bousquet, and Everett (Ground 2) renders obvious that “the
`
`at least one of the plurality of respective secondary stations retransmits the same
`
`respective request in consecutive allocated time slots without waiting for an
`
`acknowledgement until said acknowledgement is received from the primary
`
`station.”
`
`
`
`12
`
`
`
`2.
`
`The Combinations with Patsiokas are Proper
`
`23. Uniloc presents arguments that “[a] POSITA would not have made
`
`any of the hypothetical combinations proposed by the Petition involving Patsiokas
`
`because, unlike Wolfe, Bousquet, and Everett, which are satellite systems,
`
`Patsiokas relates to 'second generation cordless telephone (CT2)’ radio
`
`telephones.” Response, 13-14.
`
`24. Ample evidence shows that a POSITA would have compared and
`
`contrasted satellite systems, such as those described by Wolfe, Bousquet, and
`
`Everett, with terrestrial systems, such as a second generation cordless telephone
`
`(CT2) radio telephones, as described by Patsiokas. Indeed, the implementation of
`
`technical aspects associated with a terrestrial phone system, such as Patsiokas’s
`
`system, in a satellite system would have been well-known in the art before the
`
`Critical Date.
`
`25. For example, Winch, which is titled “Telecommunication
`
`Transmission Systems,” is one example that proves that a POSITA would have
`
`looked to both satellite and radio technologies. Winch describes that “[t]he
`
`technology used by satellite communications overlaps terrestrial microwave radio
`
`technology to a large extent.” EX-1024, 3 (emphasis added). Winch also explains
`
`that “[t]he radio nature and operating frequencies are the same” and “[t]he main
`
`differences lie in the scale of the components.” Id.
`
`13
`
`
`
`26.
`
`Iridium is another reference disclosing that technological parallels
`
`existed between satellite and terrestrial systems (e.g., terrestrial second generation
`
`cellular wireless). See EX-1019, 6 (“satellite-based phone system” contemplated
`
`in 1993); see also 7-9. Indeed, Iridium discloses “competition [is] already three
`
`years into a ferocious, public, many-sided corporate brawl” to develop “a cellular
`
`system with very tall towers called satellites.” EX-1019, 6-7. Iridium also
`
`discloses that “Iridium satellites will not only talk to handsets and ground stations,
`
`they will also talk to each other, forming a network aloft, passing on conversations,
`
`and handing them off when they drift out of range.” EX-1019, 7-8; see also
`
`(“The signal goes from your handset straight to an Iridium satellite, which sends a
`
`query through the network of satellites to one that is over Iridium system
`
`headquarters . . . and sends the query back aloft through the network of satellites,
`
`until one satellite gets a response from the ground”), id. (some systems include
`
`satellites that “send[ ] the handset’s signal back down to a ground station that feeds
`
`into land lines”), id. (“handsets are dual-mode” having both cellular phones and
`
`satellite phones capabilities).
`
`27. Further, numerous satellite telecommunications systems were
`
`available or being developed before the Critical Date, in which the developing
`
`satellite technologies were completing or supplementing terrestrial systems, or vice
`
`versa. Evidence establishing an overlapping knowledge exchange between
`
`14
`
`
`
`satellite and terrestrial technologies is evidenced by Via Satellite, which describes
`
`numerous satellite telecommunications systems that were available in 1998. EX-
`
`1020, passim; see, e.g., 46 (“1998 will be a banner year for the mobile satellite
`
`industry.), 47 (“Orbcomm closer to its goal of providing affordable, portable, real-
`
`time communications everywhere on the planet, via a 28 satellite constellation”),
`
`40 (“Globalstar with its planned 48-satellite LEO constellation . . . will provide
`
`low-cost, high-quality telephony and other digital telecommunications services”).
`
`Via Satellite provides examples and descriptions demonstrating that similarities
`
`existed in both satellite-based and ground-based telephones. EX-1020, 40 (“Using
`
`their Iridium phone, customers will be able to place and receive calls (or pages)
`
`virtually anywhere in the world”).
`
`28. Thus, based on these reasons and contrary to Uniloc’s argument, the
`
`evidence demonstrates that a POSITA would have been motivated to apply
`
`techniques found in terrestrial systems, such as those found in Patsiokas, in
`
`satellite systems, like those of Wolfe’s system.
`
`29. Uniloc also contends in its Response that “Patsiokas addresses a
`
`shortcoming in cordless radio telephone systems that is not identified or present in
`
`the satellite systems of Wolfe, Bousquet, and Everett, and therefore, a POSITA
`
`would not have been motivated to make the proposed combinations with
`
`Patsiokas.” Response, 14. Uniloc’s arguments, however, are factually incorrect.
`
`15
`
`
`
`
`
`30. Uniloc alleges that the proposed combinations are non-obvious
`
`because, “[s]imilar to Everett, . . . Wolfe shows a single reference station (base
`
`station) because of the lack of range issues in satellite systems.” Response, 18
`
`(emphasis added); see also Response, 17 (“as shown . . . all of the VSATs
`
`communicate with a single hub (base station) because there are no range issues.”).
`
`This argument is factually incorrect.
`
`31. Uniloc’s premise that satellite systems, such as the system disclosed
`
`by Wolfe, use only a single base station and do not suffer from the problems
`
`addressed by Patsiokas is factually incorrect. Wolfe itself discloses a system that
`
`includes multiple base stations (e.g., reference stations). EX-1005, 5:20-21.
`
`“Wolfe’s system . . . includes at least two primary stations, where each primary
`
`station can independently allocate a channel to a secondary station.” Petition, 37
`
`(citing to EX-1005, 5:20-21) (emphasis added). Indeed, Wolfe explains that
`
`“[t]wo independent reference stations” provide “additional reliability.” EX-1005,
`
`5:20-21.
`
`32. Furthermore, satellite systems having multiple primary stations were
`
`well-known in the area of telecommunication technology before the Critical Date.
`
`As evidence of this well-known knowledge of a POSITA, Everett describes a
`
`satellite system that includes multiple primary stations (e.g., hubs):
`
`16
`
`
`
`
`
`EX-1023, FIG. 19.2; see also 352-5. Everett describes that in multi-hub systems,
`
`“hubs can communicate with each other on the same channel (s) as the one used to
`
`communicate with rural terminals, or the hubs can use separate channels reserved
`
`for communication between hubs.” Id., 352.
`
`33. There would have been multiple reasons why having “the presence of
`
`more than one hub” would have been desirable in a satellite system, as explained
`
`by Everett. Id. First, multiple hubs are “desirable for establishing a high level of
`
`system reliability by virtue of in-built system redundancy” because “[a] single hub
`
`architecture fails completely if the hub becomes unserviceable.” Id. Second,
`
`“multiple hub architecture can provide a more timely warning of impending
`
`congestion in the network and the system capacity can be increased by upgrading
`
`17
`
`
`
`existing hubs or increasing the number of hubs.” Third, Everest teaches that the
`
`“potential applications of the network indicate the need for a multiple hub
`
`architecture,” for example, such a system “can be a valuable feature in large
`
`national systems.” Id., 354. Thus, Patent Owner’s allegation that “all of the
`
`VSATs communicate with a single hub (base station) because there are no range
`
`issues” is unpersuasive. Accordingly, a POSITA would have found range issues to
`
`exist in the combinations of Wolfe and Bousquet or Wolfe, Bousquet, and Everett
`
`and would have been motivated to add the teachings of Patsiokas to help address
`
`these range issues and ensure a device connects to the best satellite and/or base
`
`station available for communication.
`
`V. ADDITIONAL REMARKS
`34.
`I currently hold the opinions set expressed in this Declaration. But
`
`my analysis may continue, and I may acquire additional information and/or attain
`
`supplemental insights that may result in added or even modified observations.
`
`35.
`
`I hereby declare that all statements made of my own knowledge are
`
`true and that all statements made on information and belief are believed to be true.
`
`I further declare that these statements were made with the knowledge that willful
`
`false statements and the like so made are punishable by fine or imprisonment, or
`
`both, under Section 1001 of the Title 18 of the United States Code and that such
`
`18
`
`
`
`willful false statements may jeopardize the validity of the application or any
`
`patents issued thereon.
`
`Dated: January 8, 2020 By:
`
`
`
`/Paul G. Steffes/
`
`
`
`
`
`Dr. Paul G. Steffes,
`Of Atlanta, Georgia
`
`19
`
`
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